Matthias KLEINHANS et al.

Patent Trials and Appeals Board

Sep 9, 2020

2019006738 (P.T.A.B. Sep. 9, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/573,263 12/17/2014 Matthias KLEINHANS 5000.P0381US 1311
23474 7590 09/09/2020
FLYNN THIEL, P.C.
2026 RAMBLING ROAD
KALAMAZOO, MI 49008-1631
EXAMINER
KHARE, ATUL P
ART UNIT PAPER NUMBER
1742
NOTIFICATION DATE DELIVERY MODE
09/09/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
DOCKET@FLYNNTHIEL.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHIAS KLEINHANS and BERNHARD ROTH
Appeal 2019-006738
Application 14/573,263
Technology Center 1700
BEFORE JEFFREY T. SMITH, JEFFREY B. ROBERTSON, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–3, 12–14, 16, and 17.
Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 This Decision includes citations to the following documents: Specification
filed December 17, 2014 (“Spec.”); Final Office Action mailed September
13, 2018 (“Final Act.”); Appeal Brief filed March 25, 2019 (“Appeal Br.”);
Examiner’s Answer mailed July 11, 2019 (“Ans.”); and Reply Brief filed
September 11, 2019 (“Reply Br.”).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Sandvik Materials
Technology Deutschland GmbH. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
Appellant states the invention relates to a method and apparatus for
the production of bitumen blocks. Spec. ¶ 2. Claim 1, reproduced below, is
illustrative of the claimed subject matter (Appeal Br., Claims Appendix 1):
1. A method for producing a bitumen collection made from
bitumen with penetration values according to DIN EN 1426
of more than 10 decimillimeters, the method comprising the
steps of:
forming bitumen drops from molten bitumen in a drop
former;
depositing the bitumen drops on a rotating belt of a belt
cooler;
solidifying the bitumen drops on the rotating belt of the belt
cooler into tablets;
removing the tablets from the rotating belt; and
decanting the tablets into bags, the tablets being at least
partially combined, inside the bags, into a compact bitumen
mass.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Mandzsu et al.
hereinafter
“Mandzsu”
US 2012/0261278 A1 October 18, 2012
Bolton et al.
hereinafter “Bolton”
US 2013/0036714 A1 February 14, 2013
van Doormaal et al.
hereinafter “van
Doormaal”
EP 1,312,547 A1 May 21, 2003
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Sandvik Sandvik Rotoform® process
New performance standards in
premium pastillation
January 10, 2004
REJECTIONS
1. The Examiner rejected claims 13, 14, and 16 under 35 U.S.C.
§ 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing
to comply with the written description requirement. Final Act. 7.
2. The Examiner rejected claims 13, 14, and 16 under 35 U.S.C.
§ 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph. Final
Act. 7–8.3
3. The Examiner rejected claim 3 under 35 U.S.C. § 112(d) as being
of improper dependent form for failing to further limit the subject
matter of the claim upon which it depends. Final Act. 8–9.
4. The Examiner rejected claims 1–3, 12, and 17 under 35 U.S.C.
§ 103 as unpatentable over Sandvik in view of Bolton and/or either
of Mandzsu and van Doormaal.4 Final Act. 10–12.
5. The Examiner rejected claims 13, 14, and 16 under 35 U.S.C.
§ 103 as unpatentable over Sandvik in view of Bolton and either
Mandzsu or van Doormaal. Final Act. 12.

3 The Examiner withdrew the rejection of claims 1–3, 12, and 17 in the
Answer. Ans. 5.
4 The Examiner withdrew the rejection of claims 1–3, 12, and 17 under
35 U.S.C. § 102(a)(1) as anticipated by Sandvik alone. Ans. 5.
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OPINION
Rejection 1
The Examiner’s Rejection
In rejecting claim 13 as lacking written description support, the
Examiner found the Specification does not provide support for decanting
taking place by molding because the Specification discloses the steps of
decanting and molding take place in distinct decanting and molding stations.
Final Act. 7.

Appellant’s contentions
Appellant contends the Specification provides support for claim 13
because the Specification states: “[a]ccording to the invention, the bags
filled with the tablets can then be brought to the desired shape, for example a
parallelepipedal shape, in a moulding press,” and “by virtue of the invention,
the benefits of easy decanting of the bitumen tablets in the cold state can be
combined with the exact shaping of the bags after pressing.” Appeal Br. 3,
citing Spec. ¶ 10.

Issue
Has Appellant demonstrated reversible error in the Examiner’s
position that claim 13 lacks written description support?

Discussion
We are not persuaded by Appellant’s arguments. In order to satisfy
the written description requirement, the disclosure must convey with
reasonable clarity to those skilled in the art that the inventor was in
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possession of the invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555,
1563–64 (Fed. Cir. 1991). Compliance with the written description
requirement is a question of fact. Id. at 1562–63.
We, like the Examiner, find that the Specification does not provide
support for a decanting step that includes “shaping the bags filled with
tablets into a desired shape with a moulding press” as recited in claim 13.
Rather, the portions of the Specification cited by Appellant only describe
the “benefits” of both decanting and pressing, and not that decanting
encompasses pressing with a moulding step. See Ans. 6. Indeed, the
Specification describes a decanting device (38), which is used to pour the
solidified tablets into bags and a moulding press (40), which is used to press
the filled and closed bags into a desired shape, as separate components.
Spec. ¶¶ 26, 30, 31; Fig. 1. The Specification further describes a separate
moulding press station 70. Spec. ¶ 33; Fig. 2. As a result, we are of the
view that one of ordinary skill in the art would not have understood
Appellant to be in possession of an embodiment where the decanting step
would include a moulding press as recited in claim 13.
Accordingly, we affirm the Examiner’s rejection of claim 13 as well
as claims 14 and 16 dependent therefrom, as lacking written descriptive
support.

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Rejection 2
The Examiner’s Rejection
In rejecting claim 13, the Examiner determined that claim 13 is
ambiguous because decanting and shaping/moulding are two distinct steps.
Final Act. 8.5

Appellant’s contentions
Appellant relies on similar arguments above to support the position
that claim 13 is not indefinite. Appeal Br. 7.

Issue
Has Appellant demonstrated reversible error in the Examiner’s
position that claim 13 is indefinite?

Discussion
During examination, “[a] claim is indefinite when it contains words
or phrases whose meaning is unclear.” In re Packard, 751 F.3d 1307,
1310, 1314 (Fed. Cir. 2014 (per curiam) (citing Manual of Patent
Examining Procedure § 2173.05); In re Zletz, 893 F.2d 319, 322 (Fed. Cir.
1989) (“[a]n essential purpose of patent examination is to fashion claims that
are precise, clear, correct, and unambiguous. Only in this way can
uncertainties of claim scope be removed, as much as possible, during the
administrative process.”)

5 The Examiner withdrew other rationales for rejecting claims 13 and 16
under this rejection in the Answer. Ans. 7.
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We are not persuaded by Appellant’s argument. As discussed above,
with respect to Rejection 1, we agree with the Examiner that the recitation in
claim 13 that “the step of decanting comprising shaping the bags filled with
tablets into a desired shape with a moulding press” is not sufficiently clear in
view of the disclosure in the Specification that decanting and pressing by
moulding involve different components and are apparently distinct steps.
Appellant provides no persuasive basis to conclude that the term “decanting”
encompasses pressing/moulding, and the more reasonable understanding
based on both the Specification and the plain meaning of the term
“decanting” is that decanting and pressing/moulding are distinct steps; i.e., a
decanting step is performed, followed by a pressing/moulding step. Cf.
Zletz, 893 F.2d at 322.
Accordingly, we affirm the Examiner’s rejection of claim 13 as well
as claims 14 and 16 dependent therefrom, as being indefinite.

Rejection 3
The Examiner’s Rejection
In rejecting claim 3 for being of improper dependent form as failing to
further limit the subject matter of the claim upon which it depends, the
Examiner determined that because claim 2 recites “pressing the bags filled
with tablets into a desired shape,” the recitation in claim 3 of “applying a
pressure to the bags filled with tablets such that the tablets are at least
partially combined into the compact bitumen mass” does not further limit
claim 2. Final Act. 9. In particular, the Examiner determined that claim 2
already requires applying pressure to the bags such that the bags are at least
partially combined into a compact mass. Id.; Ans. 8–9.
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Appellant’s contentions
Appellant contends Claim 3 further limits claim 2 because claim 2
recites “pressing the bags” and claim 3 recites “applying a pressure,” which
is a particular and specific method of pressing the bags. Appeal Br. 8.

Issue
Has Appellant demonstrated reversible error in the Examiner’s
position that in reciting “applying a pressure,” claim 3 does not further limit
claim 2?

Discussion
We are not persuaded by Appellant’s argument. Other than repeat the
language of the claims, Appellant does not substantively address the
Examiner’s position. In this regard, we find the Examiner’s position to be
reasonable because it is unclear to us how “applying a pressure” is a
“particular and specific method” of “pressing” rather than just a matter of
semantics. See Ans. 8–9. In other words, Appellant has not explained, and
we do not discern, how “pressing” the bags would be accomplished without
“applying a pressure.”
Accordingly, we affirm the Examiner’s rejection of claim 3 for being
of improper dependent form.

Rejection 4
Appellant presents arguments only with respect to claim 1. Appeal
Br. 13–14. Thus, we select claim 1 as representative for disposition of this
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rejection, with the patentability of the remaining claims standing or falling
with claim 1. 37 C.F.R. § 41.37(c)(1)(iv)(2019) .

The Examiner’s Rejection
In rejecting claim 1, the Examiner found Sandvik discloses each of the
claimed drop forming, depositing, solidifying, removing, and decanting
steps recited in the claim. Final Act. 10, citing Sandvik p. 2–3. The
Examiner found Sandvik discloses bitumen, but Sandvik does not
specifically disclose bitumen having the penetration values in claim 1. Id.
10–11; Ans. 13. The Examiner found Bolton discloses a similar technique
to packaging bitumen as disclosed in Sandvik, and Bolton discloses the
bitumen material may be customized to influence downstream properties
including physical properties of the resulting product. Id. at 11.
Accordingly, the Examiner determined it would have been obvious to have
adjusted penetration values of bitumen in order to determine the desired
physical properties for the material and that it would have been obvious to
have incorporated the disclosure in Bolton into the materials processable by
Sandvik’s technique. Id. The Examiner determined also that Sandvik’s
method would result in compacted bitumen as a result of gravity forces
imparted on the bags due to the stacking of the bags during storage as
depicted in Sandvik. Id.
Alternatively, the Examiner found that Mandzsu and van Doormaal
disclose bagged granulate material that is subjected to compaction to form
blocks thereof, which are easier to stack and store more efficiently, such that
it would have been obvious to incorporate the methods of compacting
disclosed therein into the method disclosed in Sandvik. Id. at 11–12.
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Appellant’s contentions
Appellant contends Sandvik teaches away from soft bitumen because
Sandvik discloses pastilles that must remain as uniform and unbroken pieces
after formation and are of “a highly uniform shape and stability.” Appeal
Br. 11–12. Appellant contends the use of soft bitumen is critical to carrying
out the method recited in claim 1, including first forming the tablets and at
least partially combining the tablets, which produces unexpected results. Id.
at 12. Appellant contends Bolton does not disclose bitumen with the
penetration values recited in the claims, such that even if Sandvik and
Bolton are combined, the resulting combination would not include all of the
features of the claims. Id. at 13.

Issue
Has Appellant demonstrated reversible error in the Examiner’s
position that it would have been obvious to have utilized bitumen having the
penetration values recited in claim 1 in the process of Sandvik in view of
Bolton?

Discussion
We are not persuaded by Appellant’s arguments. At the outset, we are
not persuaded that Sandvik’s disclosure that the system is “capable of
producing pastilles of highly uniform shape, stability, and quality” (Sandvik
2) teaches away from “soft” materials including bitumen having the
penetration values (see Spec. ¶ 23) recited in claim 1. That is, Sandvik does
not limit its disclosure to materials of a specific hardness, disclosing
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generally that “[m]elts with widely varying properties can be handled with
special Rotoform models.” Sandvik 2.
Indeed, as the Examiner points out, Sandvik discloses a wide range of
melts may be processed using the method disclosed therein. Ans. 17;
Sandvik 4. Thus, that Sandvik additionally discloses that as a result of the
process disclosed therein, “the energy and equipment costs associated with
subsequent grinding, crushing, or other breaking processes” are eliminated
(Sandvik 2), does not mean Sandvik is limited to bitumen materials that
would have penetration values below the range recited in claim 1. In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“[t]he prior art’s mere
disclosure of more than one alternative does not constitute a teaching away
from any of these alternatives because such disclosure does not criticize,
discredit, or otherwise discourage the solution claimed….”).
We are also not persuaded by Appellant’s argument that Sandvik in
view of Bolton does not render the bitumen having the penetration values
recited in claim 1 obvious. As discussed above, Sandvik does not
particularly limit the materials to which the method disclosed therein can be
applied, and Sandvik expressly discloses bitumen. Sandvik 4. Bolton
discloses bitumen “without intending to be limited.” Bolton ¶ 122. As
pointed out by the Examiner, Bolton discloses different ways in which
asphalt may be modified. Id. ¶¶ 127–129, 136. Bolton discloses also
different applications for the processed materials including “roofing
formulations.” Id. at ¶ 229. The Specification discloses “soft bitumen”
having penetration values of about 20 dmm to 40 dmm are used “for the
sealing of roofs.” Spec. ¶ 23. Thus, we are of the view that the Examiner’s
position that it would have been obvious to have employed bitumen
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depending on the downstream physical properties desired for the material
including the penetration values for the bitumen recited by claim 1 is
sufficiently supported by the record.
We are not persuaded by Appellant’s argument that the bitumen
having penetration values recited in claim 1 is critical and produces
unexpected results in terms of the tablets recited in claim 1 being partially
combined into a compact bitumen mass. As explained by the Examiner, the
stacking of bags over one another as depicted in Sandvik’s storage area
would result in the tablets of bitumen being compacted as recited in claim 1.
Ans. 14–15. Appellant has not sufficiently explained why such a result
would have been unexpected when the bitumen having the penetration
values recited in claim 1 is selected based on the end application and
processed according to the method disclosed in Sandvik.
As a result, we need not address the Examiner’s alternative rationale
involving Mandzsu and/or van Doormaal.
Accordingly, we affirm the Examiner’s rejection of claim 1 as well as
claims 2, 3, 12, and 17 dependent therefrom, as obvious over Sandvik and
Bolton.

Rejection 5
Appellant does not present separate arguments with respect to the
claims subject to this rejection. See Appeal Br. 14–15. Thus, we select
claim 13 as representative for disposition of this rejection. 37 C.F.R.
§ 41.37(c)(1)(iv).

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The Examiner’s Rejection
In rejecting claim 13, as unpatentable over Sandvik in view of Bolton
and either Mandzsu or van Doormaal, the Examiner found Sandvik does not
specifically disclose the use of a moulding press. Final Act. 12. The
Examiner found Mandzsu and van Doormaal each disclose compacting
granulate material in bags to form blocks, which are easier to handle and
stack more efficiently and safely. Id. at 11–12, citing Mandszu, Figs. 6a–6g,
¶¶ 17, 36; van Doormaal, Abstr., Fig. 1, ¶¶ 1, 15. The Examiner determined
it would have been obvious to have incorporated the teachings of either
Mandzsu or van Doormaal into the method of Sandvik in order to provide
these same improvements to the stacked and stored blocks of Sandvik. Id. at
12.

Appellant’s contentions
Appellant contends Mandzsu and van Doormaal are directed to
systems that are specific to granulates, where Sandvik and Bolton do not
disclose granulates, such that Sandvik and Bolton do not experience the
issues in Mandzsu and van Doormaal. Appeal Br. 14–15

Issue
Has Appellant demonstrated reversible error in the Examiner’s
position that it would have been obvious to have combined Sandvik and
Bolton, with Mandzsu or van Doormaal?

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Discussion
We are not persuaded by Appellant’s arguments. In particular, as the
Examiner points out, Sandvik and Bolton each use the term “granulation” or
“granules” interchangeably with “pastille” or “pellets” such that the
Appellant’s argument that the techniques disclosed in Mandzsu or van
Doormaal would not be applicable to Sandvik and Bolton is not persuasive.
Ans. 22–23, citing Sandvik 2–4, 7, 14–16; Bolton ¶¶ 9, 10, 19. As the
Examiner further explains, the differences in the exact shape and size of the
granulates disclosed in either Mandszu or van Doormaal would not deter one
of ordinary skill in the art from applying the teachings therein to
Sandvik/Bolton, because all of the prior art pertains to packaging and
subsequent storage of bagged material in some sort of particulate form. Id.
at 23.
Indeed, the Examiner’s reasoning is consistent with controlling case
law, that “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the
same field or a different one. If a person of ordinary skill can implement a
predictable variation, §103 likely bars its patentability.” KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007). “A person of ordinary skill is also a
person of ordinary creativity, not an automaton.” Id. at 421.
Accordingly, we affirm the Examiner’s rejection of claims 13, 14, and
16 as obvious over Sandvik, Bolton, and Mandzsu or van Doormaal.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
13, 14, 16 112(a) Written
Description
13, 14, 16
13, 14, 16 112(b) Indefiniteness 13, 14, 16
3 112(d) Improper
Dependent Form
3
1–3, 12, 17 103 Sandvik, Bolton,
Mandzsu, van
Doormaal
1–3, 12, 17
13, 14, 16 103 Sandvik, Bolton,
Mandzsu, van
Doormaal
13, 14, 16
Overall
Outcome
1–3, 12–14,
16, 17

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED